Benchmarking National - PRO INNO Europe

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94 BENCHMARKING NATIONAL AND REGIONAL SUPPORT SERVICES FOR SMES IN THE FIELD OF INTELLECTUAL AND INDUSTRIAL PROPERTY Private sector support for SMEs in matters related to IPR: The patent attorneys The profession of patent attorney (other terms used are patent agent or patent lawyer) was introduced soon after the establishment of patent offices, as it was recognised that in order to handle patent issues, specialized legal as well as technical know how is needed beyond that offered by regular lawyers. Patent attorneys, in contrast to regular lawyers, hold a university degree in natural sciences or in engineering as a necessary requirement for their education. Following their university graduation, they have to work in industry on patent-related issues for some time, enrol in post-graduate law courses and may then apply to take an exam in order to become an accredited patent agent. In Germany, the whole process to become a patent attorney takes at least 34 months (short path to become a patent agent) or up to 10 years (long path). The main task of a patent attorney is the legal representation of patentees vis-à-vis the patent offices and patent courts, and in this role they exercise a monopoly. Further, they also give advice regarding IPR matters. In practice, they help patentees to file their patents, aid in litigation cases, conduct prior art searches and also offer consulting on general IPR matters. It is important to notice that the concept of a patent attorney is bound to territories: In Germany (as in other countries), one can distinguish between German patent attorneys (who are only allowed to represent clients in front of the German patent office) and European patent attorneys (who can only represent in front of the EPO). For each of these two cases it is necessary to take separate exams in order to be accredited. Graph 25 shows what type of providers (public and private) the firms questioned in the user survey indicated that they seek for support of innovation projects. Although one could expect a certain bias towards publicly support offering institutions because the interviewees are actually users of such measures, and notwithstanding the fact that the user survey cannot be representative for the whole group of SMEs seeking support in innovation matters, some important and interesting conclusions can still be drawn. The most striking observation is that 18 % of the respondents frequently sought support from patent attorneys; an additional 27 % did so occasionally. In total, Graph 25 Usage frequency of different types of service providers for innovation projects, percentage of service users*) % 100 80 60 40 20 0 35 15 National agency 37 11 Regional agency *) multiple answers allowed Source: User Survey, n = 630 22 4 Chamber of Commerce 34 12 Patent office 27 18 Patent attorney frequently occasionally 24 8 External consultants 11 13 3 2 EU Other
45 % reported using patent agents. This figure places the patent attorneys third on the list of service providers used, after national and regional technology/ development agencies. If one considers only “frequent” usages, patent attorneys are even in the lead by 3 %-points. This picture is observed not only at the aggregate level, but also at the level of most of the individual services analysed. Together with anecdotal evidence collected in the course of the user survey, one can assert that patent attorneys are of vital importance for the functioning of the public IPR support system: 1. Patent attorneys seem to be the first choice of many SMEs when they are concerned with issues covering IPR. The expectations regarding the know-how of patent attorneys are quite high among SMEs, and there are indications that many SMEs do not know how to put the patent agents to their best use (see also section 5.4.4 on patent information services) 2. Many public support services act as entry point services for patent attorneys. Cases in point are especially open day services organised by technology centres/incubators or chambers of commerce. Similar “open days” are also offered by patent information centres (see German Patent Information Centre Stuttgart, annex I, case study nr. 2). Referral services, such as the ones operated by the IOI service or the Irish IPAS scheme also have an entry point function for patent attorneys (see the respective case studies in annex I). 3. Evidence has been found to support the argument that patent attorneys help SMEs in successfully applying for and using public IPR support schemes. For example, the support from patent attorneys can be considered quite important for the success of the German INSTI SME Patent Action service, as they often help SMEs in the application process for the subsidy (see INSTI SME Patent Action, annex I, case study nr. 1). 4. Patent attorneys use public support services targeted at SMEs themselves. This especially refers to patent search services, with the help of which patent attorneys conduct searches on behalf of SMEs. The above mentioned points show instances where the private sector service offerings of patent attorneys and the public service provisions are complementary and appear to serve the needs of SMEs. There seems to be, however, one type of service activity – patent database search services – which may become increasingly a conflict zone between private and public service providers (see also section 5.4.4). Some patent attorneys and especially firms focusing on conducting patent scans seem to fear that newer service offerings of patent offices will eventually drive them out of the market, if the scope of the search services widens. Examples to this end are only of an anecdotal nature, but nonetheless help to illustrate the possible problems: � The introduction of the IOI service in the Netherlands and its focus on patent scans prompted concerns of a patent attorney who filed a complaint for reasons of unfair competition. In order to avoid controversy, it was decided to alter the design of the support programme in such a way as to create a win-win situation for all involved. This “new” IOI service design only educated SMEs on the benefits of using patent information and performed only a very first patent search for them. For subsequent searches, IOI referred the SMEs to patent attorneys/commercial parties (sometimes subsidising them). Using this approach, IOI managed to increase the awareness and knowledge of SMEs, while at the same time acting as a market enlarger and catalyst for the private service sector. According to experts, this mode of operation works rather well. � According to Lagemaat and Frackenpohl (Lagemaat & Frackenpohl, 2005), the information policy of the EPO regarding the future evolution of its freely available patent databases raised concerns among private patent information service providers in the late 1990s: On the one hand, the EPO stressed that it would still offer only low-level services for free (in order to allow for the general 95 TOWARDS GOOD PRACTICES – THE REAL WORLD OF IPR SUPPORT SERVICES
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PRO INNO Europe paper N° 4 BENCHMA
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PRO INNO Europe The innovation poli
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Contents Executive Summary 9 1 Intr
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4. Case Study: Innovation by patent
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Executive Summary Background 1. The
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under all circumstances), but rathe
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overall policy level, which primari
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the fact that the business perspect
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and evaluation). Hence, there is a
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20 BENCHMARKING NATIONAL AND REGION
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22 BENCHMARKING NATIONAL AND REGION
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3 SMEs in the IPR world 3.1 SMEs an
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amount of time (mostly up to 20 yea
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In contrast to arrangements for pat
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3.3 Usage Patterns of IP protection
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industries of the ICT sector. These
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In a study conducted by Kingston (K
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Care must be taken that statements
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The first step to ensure that IP ma
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The patent troll as an SME-affine e
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Page 113 and 114: 7. References Abbot, A. (2006): Pat
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Page 117: ANNEX I - CASE STUDIES The case stu
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Table 10 Overview of public availab
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Nr. B* Country Title of the Service
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European Commission Benchmarking na
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ISBN 978-92-79-06926-0 NB-AX-07-004
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